The Complainant is Rakuten, Inc., Japan, represented by Greenberg Traurig, LLP, United States of America (the “United States”).
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Matthew Connor, No Company, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 16, 2019. The Center sent an email communication to the Parties in both English and Spanish on December 11, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the Registration Agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding based on the arguments already provided in the Complaint on December 16, 2019. The Respondent did not submit any communication regarding the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 17, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a Japanese e-commerce company founded in 1997. The Complainant’s online marketplace at “www.rakuten.com/shop” offers over 18 million products and has over 20 million customers. The Complainant’s e-commerce platform, Rakuten Ichiba, is one of the largest e-commerce websites in Japan with an active membership of about 83 million. The Complainant’s global gross transaction volume is around USD 118 billion as of December 2017. The Complainant has also been active in the United States since at least as early as 2000, where it has significant ownership interests in Pinterest and Lyft, and is the owner of Ebates Proformance Marketing, Inc. doing business as Rakuten Rewards, Linkshare (rebranded Rakuten Marketing), Slice, OverDrive, and Buy.com. The Complainant has partnerships with professional sports teams including the Golden State Warriors, and FC Barcelona. The Complainant also operates an online travel business at “travel.rakuten.com”, being one of Japan’s largest online hotel reservation websites with over 1.8 million room nights booked per month, and having access to more than 20,000 domestic and 15,000 international hotels. The Complainant holds approximately 300 registrations for its RAKUTEN marks covering at least 55 countries, including: - Japanese trademark registration No. 5536382, registered on November 16, 2012, in connection with goods and services comprised in international classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45; The disputed domain name was created on March 28, 2019. The website at “www.travelrakutenmexico.com” has been inactive since registration of the disputed domain name but the address [...]@travelrakutenmexico.com has been used by the Respondent, masquerading as the Complainant, to send offers supposedly aimed to purchase timeshare memberships. 5. Language of the Proceeding As stated in section 3 supra, the Complaint was filed in English while the Registrar advised the Center that the language of the Registration Agreement for the disputed domain name is Spanish. Among the arguments and evidence proffered in support of the Complainant’s request to replace Spanish with English in the instant proceeding are: ii) the disputed domain name wholly contains the Complainant’s trademark, which in addition comprises words written in English; iii) the Respondent is purportedly located in the United States, whose sole official language is English. To determine the language of the proceeding, the Panel finds guidance in paragraph 11(a) of the Rules, which reads: “11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Having regarded to the circumstances of this proceeding, the Panel finds that: a) the Respondent failed to rebut the reasons provided by the Complainant to select English over Spanish as the language of the proceeding; Consequently, the Panel determines that English shall be the language of the proceeding. 6. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: (i) the Respondent registered and is using a disputed domain name that is nearly identical and confusingly similar to the Complainant’s RAKUTEN mark; (ii) the disputed domain name incorporates the Complainant’s RAKUTEN mark in full, merely adding the generic word “travel” and the geographically descriptive name of the country “Mexico”, which do not avoid confusing similarity but rather adds to the likelihood of confusion; (iii) the disputed domain name was undoubtedly selected by the Respondent to trade upon both the famous RAKUTEN mark and the Complainant’s “Rakuten Travel” name; (iv) without the Complainant’s authorization or consent, the Respondent registered a disputed domain name that misappropriates the Complainant’s RAKUTEN mark; (v) the Respondent is not commonly known by the disputed domain name, has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Complainant to register or use the disputed domain name; (vi) to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating RAKUTEN anywhere in the world; (vii) the Respondent has used the disputed domain name to create email addresses, including [...]@travelrakutenmexico.com to impersonate the Complainant and engage in fraudulent emails involving the reselling of timeshares; (viii) the Respondent makes false offers to purchase timeshares that require the seller to pay various fees, such as commission or transfer fees, but the Respondent steals those fees and never sends payment for the timeshare; (ix) to conduct its fraudulent scheme, the Respondent uses the same “Rakuten Travel” name and logo shown on the Complainant’s “travel.rakuten.com” website and uses the disputed domain name to trick customers into believing they are receiving legitimate offers to buy timeshares from a reputable company such as the Complainant; (x) numerous UDRP panels have concluded that use of a domain name to impersonate a complainant and commit fraud establishes that the respondent has no rights or legitimate interests in the disputed domain name; (xi) the Respondent had actual knowledge of the Complainant’s mark as inferred from the fact that the Respondent specifically targeted the Complainant and its RAKUTEN mark in the Respondent’s fraudulent timeshare reselling scam; (xii) the Respondent’s use of the disputed domain name to impersonate the Complainant and send fraudulent communications and solicitations to steal money through a timeshare reselling scam undoubtedly constitutes bad faith under the Policy; (xiii) the Complainant’s business has already been disrupted by the Respondent’s impersonation of the Complainant and scamming of the Complainant’s customers, based on numerous complaints the Complainant has received regarding the Respondent’s timeshare reselling scam. B. Respondent The Respondent did not reply to the Complaint. 7. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant owns trademark registrations for RAKUTEN worldwide, including Japanese trademark registration No. 5536382 RAKUTEN (registered on November 16, 2012), United States trademark registration No. 4,088,493 RAKUTEN, (registered on January 17, 2012), and EUTM registration No. 4755682 R RAKUTEN, (registered on December 13, 2007), all of which predate registration of the disputed domain name. To the Panel’s eye, the RAKUTEN mark is clearly recognizable within the disputed domain name despite being placed adjacent to “travel”, which is a purely descriptive term, and “Mexico”, which is a country name. Pursuant to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark on which the Complaint is based. The Complainant has passed the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant avers to not have authorized the incorporation of its RAKUTEN mark in the disputed domain name. The Complainant also submits that the Respondent is not commonly known by the disputed domain name. The Panel regards the above factual submissions to be credible in light of the submissions and evidence on file, and notably, taking into account the goodwill attached to the Complainant’s RAKUTEN mark. At any rate, those submissions remain uncontested by the Respondent. Most notably, because the Complainant made a showing that the Respondent, falsely trading as the Complainant, sent offers to purportedly buy memberships from individuals owning timeshares, the Panel is convinced that the Respondent does not possess rights or legitimate interests in the disputed domain name within the meaning of the Policy. See section 2.13.1 of the WIPO Overview 3.0 (panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent). To put it briefly, the Complainant has fulfilled the second limb of Policy, paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” The Panel notes that the term “Rakuten” is highly distinctive and has no meaning in English1 . Because the mark RAKUTEN is exclusively associated in the global market with the Complainant, the Panel holds that the Respondent abused the Complainant’s mark by registering the disputed domain name. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark). In this vein, the Panel finds that the Respondent could not have been unaware of the Complainant’s reputation under the RAKUTEN mark. See Rakuten, Inc. v. Registration Private, Domains By Proxy, LLC / Jack Lim, WIPO Case No. D2018-1996 (the respondent must have been aware of the complainant’s mark when it registered the domain name The Complainant has produced copies of documents emailed by Respondent showing fraudulent offers from “Rakuten Travel” to purchase a timeshare at El Cid resort in Mexico for USD 105,000 and USD 150,000, with such documents displaying [...]@travelrakutenmexico.com as the Respondent’s email address. The Complainant also produced a copy of an “owner transfer request” along with a wire payment for the timeshare at “El Cid” in Mexico emailed to [...]@travelrakutenmexico.com. In light of this evidence, the Panel is persuaded that the Respondent impersonated the Complainant for fraudulent ends by masquerading as the Complainant to make its timeshare’s purchase offers appear legitimate.2 The use of a disputed domain name for scam and impersonation purposes is conclusive evidence of bad faith under the Policy. See Beam Suntory Inc. v. Name Redacted,WIPO Case No. D2018-2861 (given respondent’s attempt to impersonate complainant and in light of complainant’s long use of its marks, it is more than likely that respondent solely registered the disputed domain name for fraudulent purposes); see also Rakuten, Inc. v. Whois Agent, Whois Privacy Service, Inc. / MARVIN RUFF, WIPO Case No. D2018-1225 (the disputed domain name The Panel also takes notice that the Respondent’s written purchase offers include an address in Nuevo Leon, Mexico, which is falsely attributed to the Complainant, as the Complainant’s official website at “https://global.rakuten.com/corp/about/map/” does not list an office in Mexico, thereby bolstering the Respondent’s deceiving intent. All these circumstances compel the Panel to ultimately find that the Respondent registered and has been using the disputed domain name in bad faith within the purview of the Policy. The Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Reynaldo Urtiaga Escobar 1 The United States Patent and Trademark Office Registration Certificate for the Complainant’s United States Trademark Registration No. 4,088,493 certifies that “THE WORDING “RAKUTEN” HAS NO MEANING IN A FOREIGN LANGUAGE”. 2 This is corroborated by evidence, as one of the complaining individuals approached by the Respondent wrote in an online discussion forum titled “Re: Quickbeds wants to purchase time share”, the following comment: “This just happened to me… but not with Quickbeds - it was Rakuten Travel (which sounds legit because Rakuten just bought eBates) but I was leery about wiring money to a Mexican bank to pay off my loan for the timeshare.”
- United States trademark registration No. 4,088,493 RAKUTEN, registered on January 17, 2012, in connection with services comprised in international classes 35, 39, 43; and- European Union trademark (EUTM) registration No. 4755682 R RAKUTEN, registered on December 13, 2007 in connection with services comprised in international class 35.
i) the Respondent plainly understands and speaks English based on the fraudulent purchase offers that the Respondent sent entirely in English using the disputed domain name;
b) the signed purchase offers sent by the Respondent to timeshare holders through an email address incorporating the disputed domain name are written in English;
c) the Respondent’s address of record is in the United States, where English is the sole official language;
d) the disputed domain name incorporates the term “travel”, which is a verb and noun in English;
e) the Respondent shall be deemed to be fully conversant in English.
Sole Panelist
Date: February 7, 2020
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